Lisa Ritson - Blake Dawson

Lisa Ritson is Blake Dawson’s national IP Practice Head. Rated as a leading individual in Intellectual Property: Trademark and Copyright Law by Chambers Global, 2007, “Lisa Ritson increasingly attracted the attention of the market for her ‘prompt responses and astute business sense”‘ Chambers Global, 2008 and in Intellectual Property Best Lawyers International 2008: Australia.

Lisa Ritson is an internationally recognised IP lawyer and does a broad range of contentious and non-contentious intellectual property and e-commerce work including in the areas of trade marks, copyright, merchandising, marketing and advertising, sponsorship and endorsement, franchising, intellectual property licensing, passing off, confidential information, and consumer protection. Lisa Ritson is a “superb IP lawyer with an excellent practice” in both the contentious and commercial spheres Chambers Global, 2008.

Blake Dawson - Battle over the colour purple goes against Cadbury - Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited (No 8) [2008] FCA 470

Arthur Artinian and Lisa Ritson of Blake Dawson report that Justice Heerey of the Federal Court of Australia has handed down his decision of Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited (No 8) [2008] FCA 470 in the long-running dispute between Cadbury Schweppes Pty Ltdand Darrell Lea Chocolate Shops Pty Ltd in relation to the use of the colour purple for chocolate and confectionery. According to Arthur Artinian and Lisa Ritson, Justice Heerey dismissed Cadbury’s claims against Darrell Lea.

Arthur Artinian and Lisa Ritson note that Cadbury has claimed that use of a particular shade of purple in connection with Darrell Lea’s chocolate confectionery business during the Christmas trading period in 2000 – 2004 amounted to actionable passing off at common law, misleading and deceptive conduct, and false representations in contravention of sections 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) (TPA). Arthur Artinian and Lisa Ritson also note that Justice Heerey, who decided the case at first instance, was required to treat the trial as continuing and to reconsider expert evidence adduced by Cadbury which discussed the importance of colours in modern day marketing practices. Although Cadbury had sought a new trial on appeal, Arthur Artinian and Lisa Ritson observed that the Full Court of the Federal Court of Australia held that justice would be served by a further hearing before the primary judge at which Cadbury’s expert evidence would be considered.

According to Arthur Artinian and Lisa Ritson, the decision of Justice Heerey may mark the end of a five year legal battle between Cadbury and Darrell Lea, during which this matter has been heard by his Honour at first instance, by the Full Federal Court of Australia, and again by his Honour in the present decision. However, it has been widely reported in the Australian press that Cadbury intends to appeal the decision, so the battle is clearly not over yet. The decision of Justice Heerey confirms that it remains extremely difficult to enforce rights in relation to non-traditional brand elements such as colours where such elements are used, albeit to a lesser extent, by other traders in the relevant market.

Blake Dawson - Battle over the colour purple goes against Cadbury

Blake Dawson - “Sportsboy” too close to “Sportsgirl”

Emma Rodigari and Lisa Ritson of Blake Dawson report on SPORTSBOY Trade Mark [2007] ATMO 71 (22 October 2007), in which a Delegate of the Registrar of Trade Marks has refused to register the SPORTSBOY trade mark in relation to clothing in Australia in light of opposition by the proprietor of the well-known SPORTSGIRL trade marks. The Delegate considered Sportsgirl’s reputation along with prior use of its registered and unregistered SPORTSGIRL trade marks and held that Sportsgirl had done “sufficient work” in putting the onus onto the Applicant to establish that its trade mark would not deceive or cause confusion.

Blake Dawson - “Sportsboy” too close to “Sportsgirl”

Blake Dawson - It was never in the bag: the Colorado Appeal

Melinda Upton, Helen Gill and Lisa Ritson of Blake Dawson report on the decision of Colorado Group Limited v Strandbags Group Limited [2007] FCAFC 184, in which the Full Court of the Federal Court of Australia ordered the cancellation of the COLORADO trade mark registration in respect of backpacks. According to Melinda Upton, Helen Gill and Lisa Ritson, the Full Court of the Federal Court of Australia upheld the primary judge’s view that backpacks are not goods of the same kind as handbags, wallets and purses and ordered the cancellation of the COLORADO trade mark registration in respect of backpacks.

Melinda Upton, Helen Gill and Lisa Ritson note that trade mark owners should keep in mind that “goods of the same description” may be interpreted narrowly for the purposes of deciding ownership. Melinda Upton, Helen Gill and Lisa Ritson also note that trade mark owners should be aware that their trade mark registration may be open to attack on the basis that the mark did not, as at the date of registration, distinguish their goods and services from those of others if, prior to their registration, another trader has also used the mark for the same type of goods or services.

Blake Dawson - It was never in the bag: the Colorado Appeal

Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive

Elizabeth Ireland and Lisa Ritson of Blake Dawson report on Scotch Whisky Association v De Witt [2007] FCA 1649, in which the Federal Court has upheld a decision of the Trade Marks Office that the use of the mark “Glenn Oaks” in relation to a bourbon product was not likely to confuse, deceive or mislead consumers to think the product was of Scottish origin, or was a whisky, not a bourbon. In reaching the decision, the Court examined market differentiation between bourbon and whisky products, and consumer habits in relation to both products. Whilst the mark was accepted for registration, the Court modified the class of goods for which the mark could be used to explicitly exclude products labelled as “whisky”.

Scotch Whiskey was refused leave to appeal the decision in Scotch Whiskey Association v De Witt [2008] FCA 73 on 14 February 2008.

Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive

Blake Dawson - Dirty but not different: “Dirty Kustoms Industries” and “Kustom” trade marks deceptively similar

Eugene Ford and Lisa Ritson of Blake Dawson report on Pineapple Trademarks Pty Ltd v Brent Lloyd Morely & Emma Kathleen Clancy [2007] ATMO 81 in which Brent Lloyd Morely and Emma Kathleen Clancy applied to register the trade mark DIRTY KUSTOMS INDUSTRIES in relation to “hats, beanies, jeans, jumpers, T-shirts, skateboard apparel, shoe, belts” in Class 25 and “skateboards, skateboard accessories, surfboards, surfboard accessories” in Class 28. According to Eugene Ford and Lisa Ritson, the Australian Trade Marks Office held that the DIRTY KUSTOMS INDUSTRIES mark was deceptively similar to the prior KUSTOM trade mark and stylised KUSTOM trade marks. In considering whether the marks were deceptively similar, the Registrar’s delegate took into consideration the surrounding circumstances that the Registrar’s delegate believed were likely to apply in the relevant market, including the nature of the relevant consumers for youth clothing.

Blake Dawson - Dirty but not different: “Dirty Kustoms Industries” and “Kustom” trade marks deceptively similar

Blake Dawson - Are you really as green as you claim? Green marketing under close scrutiny in Australia

Melissa Trotter, Felicity Dougherty, Ayman Guirguis and Lisa Ritson provide an update on the enforcement actions and compliance activity of the ACCC in green marketing claims. In the recently released, “Your Consumer Rights: Environmental Claims”, the ACCC has once again warned that it will “vigorously pursue companies that breach the law”.

Blake Dawson warns that, if your business is making environmental claims, it must ensure each claim can be substantiated when challenged by an energised regulator. In particular, take care when making comparative claims as to the environmental benefits of your products over your competitors and when relying on world-wide marketing copy.

Blake Dawson - Are you really as green as you claim? Green marketing under close scrutiny in Australia

Blake Dawson - Review of copyright format-shifting provisions

Julia Carland and Lisa Ritson of Blake Dawson reports that the Australian Government has instigated a Review of sections 47J and 110AA of the Copyright Act 1968 (Cth), which allow for the copying of photographs and films in a different format and for private use. According to Julia Carland and Lisa Ritson, the Government is seeking to ascertain the adequacy of the current provisions and whether the copying exception should be expanded or limited and in particular whether the provisions should be amended to allow digital-to-digital copying.

Blake Dawson - Review of copyright format-shifting provisions

Blake Dawson IP

Blake Dawson’s Intellectual Property team comprises the foremost legal experts in this field in Australia. Blake Dawson’s award winning team provides a complete range of contentious and non-contentious specialist intellectual property services. Blake Dawson is one of the few Australian law firms which provide a completely integrated full service intellectual property offering. Their team is able to register, commercialise and enforce any intellectual property (IP) right. Blake Dawson’s technical skills in IP to provide the best strategic advice to local and international companies operating in the pharmaceutical, manufacturing, publishing, food, media, financial services, airline, life sciences, chemistry, electronics, computer engineering, mining and engineering sectors.

Chambers Global, 2007 stated that Blake Dawson’s “team has a strong practice across the board”, while Chambers Global, 2006 commented that “Clients get a lot of attention, no stone is left unturned”. Asia Pacific Legal 500, 2006/2007 also noted Blake Dawson’s strong client base: “The firm acts for a long list of companies, including many globally famous brands, as well as government bodies, life sciences organisations and research institutes”. In the Managing Intellectual Property World IP Survey, 2006 the Blake Dawson IP practice received recognition in all categories: patent prosecution, patent contentious, trade mark/copyright contentious, and trade mark prosecution. They have a first-tier ranking in IP, IT and Communications and Media from Asia Pacific Legal 500, 2006/2007 and in PLC Which Lawyer? Yearbook, 2006. Blake Dawson’s life sciences practice has received particular accolades. They are judged to be a leader in Life Sciences (all categories) in PLC Cross-border Handbooks, 2006/2007. Interviewees for Chambers Global, 2007 singled out the life sciences sector as an area of “overwhelming strength” for our practice.

Blake Dawson is one of only three Australian firms listed in the top 20 IP practices in the Global Intellectual Property Super League Tables, 2006. Three of the firm’s IP partners were named in the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners, 2007.
Our perspective

Blake Dawson’s Intellectual Property practice offers Australian and international clients a full range of intellectual property services, including:
* Advising on identification, protection and management of patents, trade marks, designs and plant breeders’ rights, and related services such as drafting, filing, prosecution, opposition and strategic portfolio management
* Negotiating and drafting a full range of IP agreements, including agreements regarding commercialisation, research and development, licensing, distribution, franchising, sponsorship, joint venture and international technology transfer
* Advising on copyright, confidential information, passing off and unfair competition
* Enforcing all IP rights, including conducting IP litigation and alternative dispute resolution and developing anti-counterfeiting strategies.
* Advising on marketing, advertising and promotions and on sponsorship and merchandising agreements
* Advising on food, pharmaceutical, therapeutic goods and agricultural and veterinary chemicals regulation.

Blake Dawson’s recent Intellectual Property experience includes:

* World’s first vaccine against cervical cancer - Blake Dawson acted for CSL Limited in the Federal Court of Australia in a dispute concerning the world’s first vaccine against cervical cancer. The dispute was satisfactorily resolved. CSL subsequently successfully applied to the PBAC and federal government to annually vaccinate all Australian females aged 12 and to conduct catch up vaccinations over a two year period.
* Gambro v Fresenius - Blake Dawson acted for Gambro in its long running patent litigation against Fresenius Medical Care relating to haemodialysis systems and disposables in Australia. We represented Gambro in victories on infringement and validity in the Federal Court at first instance and before the Full Court on appeal. We also successfully defended Fresenius’s application for special leave to appeal to the High Court of Australia. Blake Dawson is currently acting for Gambro in the damages phase of the case.
* Conor Med Systems Inc v Angiotech & UBC - Blake Dawson acted for Conor who sought revocation of patents held by Angiotech Pharmaceuticals, Inc and the University of British Columbia over taxol-coated stents in the Federal Court. This was the first case to consider whether the inclusion of an additional patentee, who has no entitlement to the claimed invention, renders the patent liable to be revoked under section 138(3)(a) of the Patents Act 1990.

IP Partners at Blake Dawson

Peter Chalk
David Clark
Belinda Findlay
Grant Fisher
Ben Miller
Mary Padbury
Lisa Ritson

Senior Associates at Blake Dawson

Annika Barrett
Anita Cade
Karen Gettens
Natalie Hazel
Joanna Lawrence
Nik Ramchand
Kellech Smith
Melinda Upton

Green is the new black: Regulation of green marketing in Australia

Felicity Dougherty, Arthur Artinian and Lisa Ritson of Blake Dawson report that the Australian Competition and Consumer Commission announced that it will closely monitor green marketing activities in Australia as a result of an increasing number of consumer enquiries and complaints.

Link to Green is the new black: Regulation of green marketing in Australia